Other Technical Board of Appeal decisions relating to computer programs
At the same time as the guidelines were being revised the issue of the patent protection of computer program based inventions was being considered by the Technical Board of Appeal at the EPO in its decision of 15th July 1986 in respect of VICOM Systems Inc. Patent Application No. 79.300,903.6 (Published No. 0,005,954). The Board of Appeal accepted that "even if the idea underlying an invention may be considered to reside in a mathematical method, a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such". Claims to "a method for digitally filtering data ...." were rejected whereas claims to "a method of digitally processing images ...." were accepted.
The Board was also "of the opinion that a claim directed to a technical process which process is carried out under control of a program (be this implemented in hardware or in software), cannot be regarded as relating to a computer program as such within the meaning of Article 52(3) EPC, as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought. Consequently such a claim is allowable under Article 52(2)(c) and (3) EPC".
In the view of the Board a computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art. Claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such.
The Board considered that "making a distinction between embodiments of the same invention carried out in hardware or software is inappropriate as it can fairly be said that the choice between these two possibilities is not of an essential nature but is based on technical and economical considerations which bear no relationship to the inventive concept as such".
Accordingly, it can be stated that an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation, modern technical means in the form of a computer program are used. Decisive to the decision is what "technical contribution the invention as a whole makes to the known art".
In a second Technical Board of Appeal decision dated 21st May 1987, consideration was given to the patentability of an X-ray apparatus, which was well known from the prior art. According to the invention the X-ray apparatus was controlled "to ensure optimum exposure with sufficient protection against overloading of the X-ray tube within any given routine" by a data processing device arranged to operate according to predetermined functional requirements. The functional requirements being embodied in the computer program loaded into the data processing device. The opponents argued that Article 52 should be interpreted so as to exclude such a case where the invention was a pure computer program without any constant interaction with the X-ray apparatus hardware. The opponents argument was based upon the contention that the invention is not of a technical nature. The appellant had adduced the case law of the German Federal Court of Justice which effectively is that the subject matter is not patentable because the invention essentially consists of the program, which is excluded from patentability by Article 52(2)(c) EPC.
We can do no better than to quote directly from the Board's decision:-
"According to the case law of the Federal Court of Justice referred to above, the principle factor determining whether an invention is of a technical nature is the substance of the claimed teaching, that is the main field involved. To the Federal Court of Justice a teaching is not technical if in its essence it states a rule that can be carried out without employing controllable natural forces other than human brainpower, even if the use of technical means appears expedient or indeed the only sensible and hence the necessary procedure, and even if reference is made to these technical means in the claims or description.
The Board is unable to share this view because it makes the field in which an invention essentially lies crucial to the issue of whether that invention is or is not technical in nature. The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical character means, the use of non-technical means does not detract from the technical character of the overall teaching. The European Patent Convention does not ask that a patentable invention be exclusively or largely of a technical nature; in other words, it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements.
Apart from the fact that the Board fails to find any legal basis in the European Patent Convention for the theory of the Federal Court of Justice concerning the essence of inventions, it also sees practical objections to a need to give a weighting to technical and non technical aspects because according to the Federal Court of Justice the criterion to be applied is which aspect makes the essential contribution to the invention's success. Not only is such a decision fraught with difficulties in practice it also has the effect of making the teaching unpatentable in its entirety if the greater part is non-technical and even though the technical aspect which is found to be subordinate is in fact judged to be novel and to involve an inventive step.
The Board therefore regards it as unnecessary to weigh up the technical and non-technical features in a claim in order to decide whether it relates to a computer program as such. If the invention defined in the claim used technical means, its patentability is not ruled out by Article 52(2)(c) and (3) EPC and it can be protected if it meets the requirements of Article 52 to 57 EPC".
From the above it can be seen that the fact that the invention lies within the program should not be bar to patentability as such.
In both of the above cases the central issue was "technical effect". There have been a significant number of cases relating to computer programs considered by the European Patent Office Board of Appeal based on the Vicom and X-ray decisions. Six of these relate to text processing, (i) a document abstracting and retrieving system (T22/85-1988), (ii) a method of proof reading a text document and automatically detecting and replacing linguistic expressions (T38/86-1989), (iii) a system for listing semantically related linguistic expressions (T52/85-1989), (iv) a spell-checking arrangement for use in word processing systems (T121/85-1989) (v) a method for automatically detecting and correcting contextual homophone errors in a text document (T65/86-1989) and (vi) a method of processing data set out in table form (T95/86). In all these six text processing cases the
Board found that the inventions related to non-technical subject matter (i.e. document abstracting, linguistic expression processing, text error detection, table processing and correction and spell checking) and were, in the absence of other patentable features, unpatentable. All six cases involved IBM.
The major point to come from the six text processing cases we believe is that the claimed invention must be reviewed to identify the art the invention relates to and if that art is excluded by Article 52(2) then so is that invention unless the method used is patentable. In the above cases the Board has decided that the inventions claimed did not (i) relate to any physical entity nor (ii) to a new and inventive method of automating an otherwise excluded activity. On this latter point the Board has identified that methods and apparatus for (i) abstracting a document, (ii) detecting linguistic expressions, (iii) spell checking, (iv) generating synonyms and antonyms and (v) detecting contextual homophone errors and (vi) methods of processing data as text, which use the same steps as a mental process and when automated employ conventional equipment ordinarily programmed, are not patentable inventions.
Two further cases have been rejected T158/88 and T603/89. T158/88 relates to a method of representing characters (letters) on a VDU and was found to be an idea for a program and as the data to be processed represented neither operating parameters or a device, nor had a physical or technical effect on the way the device works and no technical problem was solved by the claimed method, the invention did not make use of any technical means and could not therefore be regarded as being patentable. Case T603/89, which was considered to be in line with cases T26/86 (the X- ray case) and T158/88, was considered not patentable although a mix of technical and non-technical elements because the invention did not solve a technical problem. The invention consisted of an apparatus for and a method of learning how to play a keyboard instrument. Conventional notation was used on the sheets of music but the notes were also marked numerically. The same numbers appeared on the keys along side the traditional notation. The technical feature claimed was the marking of the keys.
Two program related cases which have been found to include a technical effect are; (i) for a data processing network and the operation of its communications co-ordination and control program (T6/83-1988) and (ii) a method of displaying one of a set of pre-determined messages giving a visual indication about conditions prevailing in an apparatus (T115/85-1990). This latter case is interesting in that the application (Publication No. 0,052,757) related to a text processing system and was used in a method of decoding stored phrases and obtaining a read-out of events in such a system using a message build program. On appeal from a refusal from the Examining Division, the Technical Board of Appeal accepted newly drafted claims directed to "a method of displaying one set of a set of pre-determined messages comprising a phrase made up of a number of words, each such message indicating a specific event which may occur in the input/output device of a text processing system....". The text processing system was in fact incidental to the invention since it related to the arrangements used to generate screen messages for use as operator action prompts. The originally filed claims were for "a method of decoding stored phrases and obtaining a read-out of events in a text processing system....". The new claims were submitted during the Appeal Procedure after a provisional opinion from the Board agreeing with the examiner's refusal.
The method used in the invention was to cause the detection of a specific event to call into operation a message-build program. This program is used to address a message frame index table containing pointers to a phrase table. The arrival of a message from the index table causes the phrase table
pointer to be advanced to the next pointer. The difference between the pointer positions in bits indicates the number of bits in the phrase, thereby enabling a match to be found in a decode table containing words ordered on a byte-frequency basis. The resulting match provides a pointer to a table containing words encoded on a user basis, which are transferred to a buffer whose contents are displayed when a test determines that the end of the phrase has been reached. The Board began the reasons for allowing the appeal with the following observations:
Generally the Board takes the view that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem.
The Board further observed that the claims were expressed in functional terms and that they must be understood as referring to the technical means necessary for carrying out the functions. These means might or might not involve a computer program, and the Board appears to conclude that even if they did the claims were nevertheless not directed to the program "as such".
The network case is helpful in defining what is to be regarded as being technical, although achieved by software. The application claimed procedures to enable a network of computers to maintain concurrent connections between a terminal and more that one application program and to provide for simultaneous on line processing using several data files located at remote processors. The Board considered the claims to be for improved communication facilities between programs and files in a multi processor system network and, therefore, to be concerned with the internal workings of the processor network irrespective of the data files or the way application programs operated on the data.
The following EPO Board of Appeal decisions further define the line between patentable and unpatentable subject matter for inventions embodied in computer programs.
Case T110/90 (IBM) concerned a method of transforming text including transforming of printer control items. The Board found that the transformation of printer control characters from one format to another allowing documents to be converted from one text processing format to another involved conversion of printer control items which are technical features of the text processing system. The application was not a method of performing mental acts nor a program for a computer and was accordingly remitted for further prosecution.
Case T236/91 (TEXAS INSTRUMENTS INC.) concerned a menu-based natural language command input system. The Board found that the invention was not a presentation of information, was not a mental act as such nor a computer program as such and that it did include an inventive step including new features in combination not rendered obvious by the prior art. The case was remitted for further prosecution.
Case T109/90 (IBM) concerned a methodology for transforming a source document prepared by an interactive text processing system to a second editable document form usable by an interactive or batch text processing system. After amendment to claim "A method of transforming text which is represented in the form of digital data ... said method comprising the steps of: determining ... defining ... and digitally processing the text ..." the Board found that the invention as claimed in the amended claims was not a method for performing mental acts nor was it a program for a computer and the application was remitted for further prosecution.
Case T769/92 (Sohei Yamamato and Moriyama Teruko) relates to a computer based file data- entry management system in which a single electronic transfer slip is used to enter debit, credit and commodity items to update a journalised daybook file, an item master file, a commodity master file, a journalised daybook accumulation file and an inventory file and the computer file-management system is arranged to process information entered by way of the single transfer slip into the day book file and thereafter automatically to update the other files as required. The Technical Board of Appeal found that the claimed system, both apparatus and method claims, was a mix of technical (computer hardware) and processing implemented by software. They found, however, that "if a contribution to the (computer) art can be found either in a technical problem (to be) solved, or in a technical effect achieved by the solution, said mix may not be excluded from patentability under Articles 52(2), (3) EPC following T38/86". The Board was of the view that "the non-exclusion from patentability also applies to inventions, where technical considerations are to be made concerning the particulars of its implementation". The Board indicated that the "need for such technical considerations implies the occurrence of an (at least implicit) technical problem to be solved (Rule 27 EPC) and (at least implicit) technical features (Rule 29 EPC) solving that technical problem" (emphasis added). The Board found that what was not part of any conventional computer is "the particular significance of all the different files in the memory and the manner in which, by the different processing means or in the different processing steps, the input data and the data stored are handled". The Board also found that the claims although generalised to:-
- the first processing means controls the display unit and the storing of all entered data in the first file;
- the second processing means updates the data stored in the second and third files using the data entered;
- the third processing means transfers the data updated in the second file to, and stores them in, the fourth file and relates them with data stored therein for the purposes of the first type of management, or activity;
- the fourth processing means transfers the data updated in the third file to, and stores them in, the fifth file and relates them with data stored therein for the purposes of the second type of management, or activity; and
- the fifth processing means reads, and outputs, data necessary for a specific one of the two different types of activity ("management") to be performed with the respective format for that specific type of activity, or management;
did not relate to doing business as such and clearly required technical considerations. The Board accepted the appellants argument that the transfer slip was "a user interface requiring technical considerations of the person implementing the claimed invention" and considered "that said interface within the context of the whole of each of "the claims" constitutes neither only presentation of information nor only computer programs (or programming) as such".
Case T107/67 Data (De) Compression Method. The originally filed claims related to a redundancy - reducing coding method which permits, due to the redundancy occurring in a predetermined data sequence, the data sequence to be arranged in such a manner which, compared with the original
sequence, is more compact. The Board of Appeal found that such a method is not technical in character as neither are technical means used for its implementations nor does it immediately produce a direct specific technical result. The coding method thus is a rule for performing a mental act. The applicant amended the claims to apply the redundancy - reducing coding method to electronic storage and/or transfer of redundant serial data elements and the Board of Appeal accepted the new claims referring the application back to the Examining Division.